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作者：Anonymous 在 罕见奇谈 发贴, 来自 http://www.hjclub.org
这是我在Lexis找到的一篇law review article, 关于这个领域内的文法律文章很多，俺没时间细看，供感兴趣的朋友读读。
Law Review articles 属于 Secondary sources。 与此对应的是Primary authority, which refers to sources of legal rules, 比如案例（cases）、成文法律（statutes）以及行政规章 (administrative regulation). 它们都具有法律约束力 (binding authority).
与此相反，Secondary sources提供的是对某个领域内 或者某个具体法律问题解释,不具备法律约束力（not binding on courts), 一般也不会被直接引用（不管是律所内的memo还是递交法院的brief，或者法院自己的判决）。尽管如此，它们的重要作用是显而易见的。
Secondary resources are excellent research tools. Because they ofen summarize or collect authorities from a variety of jurisdictions, they can help you find mandatory or persuasive primary authority (另文解释）on a subject. They also often provide narrative explanations of complex concepts that owuld be difficult for a beginning reseracher to grasp thoroughly simply from reading primary souces. 有了这一利器，我们才能更好地搜索并确定适用的，对于法院具有约束力的法律。
常见的Secondary sources 包括：
1、法律百科全书（Legal Encyclopedias). 特点是内容宽泛，涵盖所有常见的legal subjects. National的百科全书主要有两个系列，各州也有各自的版本，涵盖本州法律的各个方面。
2、Treatises 都是些大部头，一般为对某个subject的详细讨论。
3、Legal Periodicals. 可以想象成是法律杂志上那些法律文章(不过各所法学院也都有各自的大部头式的Law Review)。特点是短小精悍，侧重practical side of the law.
4、American Law Reports. It contains articles called "annotations." Annotations collect summaries of cases from a variety of jurisdictions to provide an overview of the law on a topic. 特点是兼顾深度与广度。
5、Restatements. 有American Law Institute 召集人马所著。内容是对某个subject之内的common-law rules (不成文法，或者说由法院判决建立起来的规则）进行综合阐述。
6、Uniform Laws and Model Acts: proposed statutes that can be adopted by legislatures. 比如最常见的UCC -- 美国统一商法典 （不过要注意，在未经州立法通过之前，它只属于Secondary Resources). Model Penal Code （统一刑法典）也是如此。
下面这篇文章就属于第三类中的Law Review, 由康乃尔大学法学院编写。
文章来源Lexis, Westlaw 和 Lexis 是美国的两大法律数据库。从法学院的学生、教授，到律所的律师，法院的书记员和法官们，每天都在使用。中国现在就缺乏这样一个统一的database，以至搜索某个法律问题的答案时，要付出更多的时间和精力。当然，这需要巨额的资金和浩瀚的人力物力来建立和维持。 看看Westlaw 和 Lexis都怎么收费的？输入关键字，进行几次搜索 （per transaction) 的花费可达数百美元，这多少也是为何在美国打官司那么昂贵的原因。
最后想说的是，敲了这么些字，不是为了鼓励或怂恿老狼和芦帝打官司，只是着眼于增长知识，为坛里添点人气 ^_^
好了，不多废话了，请看：
=======================================================
80 Cornell L. Rev. 158, * （这是citation）
Copyright (c) 1994 Cornell Law Review
Cornell Law Review
November, 1994
80 Cornell L. Rev. 158
LENGTH: 19720 words
NOTE: "DRESSING" UP SOFTWARE INTERFACE PROTECTION: THE APPLICATION OF TWO PESOS TO "LOOK AND FEEL"
Steven Schortgen
SUMMARY: （对全文的总结）
... Contemporary computer software strives to maintain a balance between the functional aspects embodied in a program's underlying algorithms and the user's end experience when operating that program. ... Finally, a recent United States Supreme Court decision, Two Pesos, Inc. v. Taco Cabana, Inc., provides the creative computer lawyer with the conceptual tools necessary to argue that trade dress protection applies to the non-literal aspects of computer software, and in particular, to a program's "look and feel." ... A that software manufacturers are well advised to advertise in advance of distribution of software to establish the secondary meaning of their trade dress before the possibility of infringement arises. ... Apple's System software GUI, for example, represents this extreme position in the spectrum where trade dress protection should not occur. ... Liebman, Frischling and Brunel conclude that "while specific visual elements of the interface arguably might be protectable, most elements of the user interface are intended to communicate or enable a specific feature or operation, and thus would seem to be as functional as the labels "on' and "off' on the computer's power switch." ... Finally, the affirmative defense of de jure functionality imposes the greatest barrier to Apple's claim of trade dress protection. ...
TEXT: （主文开始，附注在结尾）
[*158] －－ 此为原书中的页码。
Contemporary computer software strives to maintain a balance between the functional aspects embodied in a program's underlying algorithms and the user's end experience when operating that program. In today's highly competitive software market, a commercially viable program must not only possess a strong algorithmic engine, it must also be "user friendly." Consequently, the "look and feel" of a program is critical to the program's success, since efficient and powerful algorithms which possess unwieldy user interfaces are of limited [*159] commercial value. "Look and feel" describes what the end-user ultimately experiences when manipulating the program. It may entail, among other elements, unique screen displays, the structure and menu hierarchy of the application, or creative user interfaces for manipulating data and program flow.
The last five years have witnessed an explosion in intuitive and graphical interfaces. 1 Moreover, as computers have become more powerful, 2 the calculations necessary to maintain robust graphical environments have become more affordable and practical. 3 This rapid increase in "mainstream technology" has allowed graphical user interfaces (GUIs) to penetrate the software market quickly. Furthermore, since commercial viability and profit generation are integrally linked to a program's interface, courts must strive to determine what sorts of protection to offer software publishers as an incentive to develop creative interfaces, while simultaneously encouraging healthy competition.
Whether one may invoke the Copyright Act 4 to protect the non-literal aspects of computer software is far from settled law. 5 Litigants asserting that copyright law protects the "look and feel" of software have obtained mixed legal results. 6 Although copyright claims will continue to be a major device employed to protect the "look and feel" of software, several jurisdictions disfavor this method of protection. [*160] Accordingly, an alternative protective method warrants consideration - namely, a cause of action under the rubric of trade dress. 7
Compared with copyright law, trade dress is a superior mechanism for the protection of GUIs for three separate reasons. First, a successful trade dress claim requires legal and factual elements distinct from those required of copyright claims - elements better suited for the protection of software. Second, the legal history and animating forces defining trade dress and copyright law differ in substantial and not unimportant ways. Finally, a recent United States Supreme Court decision, Two Pesos, Inc. v. Taco Cabana, Inc., 8 provides the creative computer lawyer with the conceptual tools necessary to argue that trade dress protection applies to the non-literal aspects of computer software, and in particular, to a program's "look and feel." In Two Pesos the Supreme Court resolved a conflict among the circuits regarding the application of section 43(a) of the Lanham Trademark Protection Act. 9 Specifically, the Court developed a new standard with respect to the common-law doctrine of trade dress that proves particularly interesting to computer lawyers.
The constructive thesis of this Note is divided into four Parts. Part I offers a brief introduction to trademark law and outlines the legislative history of the Lanham Act. Part II outlines the basic elements of a trade dress claim: secondary meaning, inherently distinct features, likelihood of consumer confusion, and the affirmative defense of functionality. Part II also applies these basic elements to [*161] graphical user interfaces. Part III presents the Supreme Court's Two Pesos decision and discusses that decision's implications for intellectual property lawyers. Finally, Part IV provides closing comments on asserting trade dress protection for GUIs, and includes a model application based loosely upon the litigation between Apple, Inc. and Microsoft, Inc. Ultimately, this Note argues that GUIs - as well as future creative interfaces - deserve protection under trade dress doctrine provided that the protected elements (i) are distinctive in nature, either inherently so or as acquired through secondary meaning, (ii) are de jure nonfunctional, and (iii) would create a substantial likelihood of consumer confusion if duplicated by a competitor.
I
Trademark Law, The Lanham Act and Its Legislative History
A.
A Brief Introduction to Trademark Law
Trademark law traverses a wide and varied course. It protects not only words and trade phrases, but drawings, logos, and distinctive features of a product's packaging. For example, a manufacturer of a softdrink will generally have trademark interests in the name of the product, the artwork on the bottle, the advertising slogan used to promote the product, and the shape of the bottle, if that shape is distinctive. If a competing softdrink producer markets a drink with a substantially similar name ("Koke" in competition with "Coke," for instance), then the initial trademark owner may obtain a court order requiring the second producer to cease the infringement. Additionally, the mark owner may seek recovery for any damages caused by the unfair competition and tarnishment of its reputation. Trademarks, therefore, are socially and economically important tools because they permit consumers to identify the source of a product's origin, and, depending upon their experience with this manufacturer, to seek out or avoid buying these goods again.
"Trade dress," a subset of general trademark law, denotes the form in which a producer presents its product to the market. Trade dress involves a product's total image and may include features such as size, shape, color or color combinations, texture, or graphics. 10 As stated by the Seventh Circuit, "a label, a package, even the cover of a book might be trade dress." 11 The Eleventh Circuit concluded, for example, that the "adoption procedure" and paperwork employed in the sale of "The Little People" toy dolls qualified as protectible trade [*162] dress. 12 Furthermore, although trade dress traditionally refers to the packaging or labeling of a product, most circuits recognize that the overall design of a product may function as trade dress, thereby entitling the manufacturer to protection under the Lanham Act. 13
Trade dress protection stems from section 43(a) of the Lanham Act. 14 Section 43(a) is not limited to trademark and trade dress infringement, but rather addresses all forms of unfair competition. Because both trade dress and trademark protection find their origin in the same common-law torts, 15 and because the Lanham Act concerns unfair competition generally, few legally substantive distinctions exist between the law of trademark and the law of trade dress. 16 Accordingly, the Supreme Court has recognized that the Lanham Act neither requires nor supports divergent treatment of trademarks and trade dress. 17
Because of its roots in the tort of "passing off," 18 trade dress is ultimately concerned with consumer confusion and therefore focuses upon the total appearance and image of a product as it is recognized by buyers in the relevant market. Thus, an inquiry into protectable trade dress does not look to individual elements, which of themselves may lack substantial significance, 19 but rather focuses on the totality of effect that the product's functional and non-functional features create. 20 The trade dress of a product, therefore, "is essentially its total image and overall appearance." 21 In Fuddruckers, Inc. v. Doc's B.R. [*163] Others, Inc., the Ninth Circuit articulated the test for trade dress infringement as whether "there is a likelihood of confusion resulting from the total effect of the defendant's package on the eye and mind of the ordinary purchaser." 22
In accordance with this emphasis on totality of effect, courts have found protectable trade dress in a variety of situations. For example, courts have held that a product's overall design, 23 its packaging or casing, 24 a china pattern, 25 a television commercial's theme, 26 the total "look and feel" of a restaurant's interior, 27 and even a rock group's musical performance style 28 each constitute protectable trade dress. Thus, since trade dress concerns itself with the overall, or gestalt, impression created by a product, both software interfaces and the "look and feel" of an application readily fall within the ambit of the Lanham Act as interpreted through the common-law tradition. 29
In the typical case in which a manufacturer seeks to prevent others from copying the appearance, or trade dress, of its product, protection under section 43(a) of the Lanham Act involves a two phase inquiry. Phase one consists of the plaintiff's factual proof while phase two provides the defendant an opportunity to raise a potent affirmative defense. In the first phase, the plaintiff must prove both (i) that the trade dress has either acquired secondary meaning or is inherently distinctive, and (ii) that the design of the competitor's product is confusingly similar to that of the plaintiff's product. 30 Trade dress acquires secondary meaning when the primary purpose of the dress is to identify the product's source of origin. 31 Alternatively, [*164] trade dress is inherently distinctive if it is either fanciful or arbitrary in design. 32 In the second phase, even if the initial manufacturer succeeds in both of the prior factual showings, the competitor may nevertheless prevail if it can prove that the copied elements were functionally dictated. This affirmative defense is based upon the intellectual property doctrine of "merger through functionality." 33
B.
The History of the Lanham Act
The Lanham Act's purpose is to promote public identification and distinguishability among competing goods to the benefit of both consumers and producers. 34 Section 43(a) of the Lanham Act 35 does not concern the registration or maintenance of trademarks per se. Instead, section 43(a) is rooted in the common-law tort of passing off or palming off, which derives from the torts of fraud and deceit. 36 "Palming off" or "passing off" is an attempt by a manufacturer to deceive the public into believing that it is trading or dealing with one company when in fact it is dealing with another. 37 Drawing on this common-law tradition, section 43(a) protects unregistered trademarks and explicitly proscribes both "false designation of origin" and "false or misleading description" of goods. 38 [*165]
In contrast, the Copyright Act of 1976 does not share this common-law tort tradition. Copyright is a positive right created by federal statute and finds its justificatory source in the Constitution. 39 Federal copyright is thus purely statutory in origin, and federal copyright common-law rights are nonexistent. 40 Copyright, like trademark law, creates an artificial monopoly, but a copyright, unlike a trademark, does not identify the source of goods.
This difference in the origin of trademark and copyright law is significant. The common-law foundation of trade dress supports broad protection for software interfaces, including screen displays, 41 that courts may be hesitant to award under copyright law. In short, interfaces that are both highly stylized and individualized to specific publishers tend to indicate a program's source of origin, and accordingly deserve trademark protection as defined by the common-law tradition that animates the Lanham Act.
Judicial interpretation of the Lanham Act began in a cautious manner. Initially, the Act's proscription of "false designation of origin" was limited to cases involving false designations of geographic origin. 42 Likewise, courts limited "false description" of goods to those cases involving materially false advertising - representations that goods or services possessed characteristics that they did not actually have. 43
Contemporary courts, however, recognize that the primary purpose of the Lanham Act is to protect both the consumer and the producer in identifying the source of a product. Thus, these courts have expanded the scope of the Act and no longer focus on the alleged infringer's intent to deceive, as the tort of palming off required. Today, confusion is the litmus test. 44 "Although some have criticized the [*166] expansion as unwise, it is now "a firmly embedded reality.' " 45 As the United States Trademark Association Trademark Review Commission noted:
Section 43(a) is an enigma, but a very popular one. Narrowly drawn and intended to reach false designations or representations as to the geographical origin of products, the section has been widely interpreted to create, in essence, a federal law of unfair competition... It has definitely eliminated a gap in unfair competition law, and its vitality is showing no signs of age. 46
Moreover, Congress impliedly supported this expansive interpretation of the Act when it enacted the 1988 amendment. 47 Even when expansively read, however, it is not clear from the language of the Act or its 1988 amendment whether Congress intended to require proof of secondary meaning as a prerequisite for protection of trade dress - an issue the Supreme Court only recently resolved in Two Pesos. Additionally, because section 43(a) does not employ the phrases "trade dress," "trademark," or "secondary meaning," the interpretative issue is severely occluded. In other words, where trade dress is concerned, the Lanham Act's language is helpful, but neither dispositive nor conclusive. One must look to the Act's purpose and legislative history to divine its intended scope. Therefore, comprehending the Act's teleological basis is a crucial step in the successful application of section 43(a). [*167]
II
The Elements of a Trade Dress Claim As Applied to Graphical User Interfaces (GUIs)
To successfully protect the "look and feel" of software under section 43(a) of the Lanham Act, a computer lawyer must establish three primary elements. 48 First, the interface or display must either be inherently distinctive or possess secondary meaning in the relevant market segment. Second, the infringing product must be likely to cause consumer confusion, such that the common-law principles for passing off or palming off are met. Finally, as in other intellectual property disciplines, the doctrine of merger through functionality lurks in the shadows, ready to defeat claims of protection that create a de facto monopoly in functionally required characteristics. Therefore, a successful plaintiff must prove that the trade dress elements seeking protection are de jure nonfunctional.
A.
Secondary Meaning Defined
"The secondary meaning inquiry is the same for trade dress as it is for a trademark." 49 Simply stated, to establish secondary meaning, "a manufacturer must show that, in the minds of the public, the primary significance of a product feature or term [or trade dress] is to identify the source of the product rather than the product itself." 50 Further, there is some authority for the proposition that the secondary meaning must attach before the putative infringement begins. 51 [*168] Additionally, the question of whether a dress has acquired secondary meaning is a factual one, in which market samples and statistical data prove efficacious.
Factors that guide the secondary meaning inquiry include: (i) whether actual purchasers of the product associate that product's dress with the producer, (ii) the degree and manner of advertising of the claimed dress, (iii) the duration and manner of dress use, and (iv) whether use of the dress has been exclusive. 52 Thus, software manufacturers would do well to establish industry recognition of a creative interface early in the product's lifetime, optimally before the product reaches retail shelves. 53
Additionally, in some jurisdictions, evidence of deliberate copying is relevant to the determination of secondary meaning. 54 In the Ninth Circuit, for example, "deliberate copying may suffice to support an inference of secondary meaning." 55 Intentional copying allows some courts to give a permissive instruction that infers secondary meaning in the senior trade dress, although even the Ninth Circuit has declined to hold that evidence of intentional copying necessarily shifts the burden of proof on this issue. 56 In other words, courts reason that competitors have no viable reason to completely mimic another's established trade dress unless the junior user were seeking to [*169] take advantage of the senior's established good will or product identification. 57
Determination of a product's putative secondary meaning requires a threshold inquiry, however, into the relevant market segment. Who must identify the senior user's product as belonging to that manufacturer - namely, for whom must secondary meaning obtain? Unfortunately, the software market presents unique difficulties when gauging the appropriate primary market. Is the final end-user the relevant consumer, or is it the MIS 58 department who purchases and maintains the software's integrity? One could argue that the relevant market shifts depending upon the nature of the application being considered. A home check balancing program, for example, would target the general software consuming populace. On the other hand, a program with a strictly business orientation may find its relevant market substantially narrower, consisting, for example, of MIS departments that purchase the application, train in-house personnel, and maintain system software integrity. 59 Ultimately this is a question for the fact-finder.
Contradictory and anomalous results could develop, however, in this bifurcated inquiry. One interface could find protection denied because the fact-finder determined the relevant market to be a narrowly-construed business environment. Such an environment might include professional MIS employees who are unlikely to misperceive a product's origin and who can identify the manufacturer of an application even where the program's "objective" secondary meaning may be lacking. 60 The same interface could then later find protection in the home software market where greater market penetration creates an increased likelihood of secondary meaning and its attendant confusion.
Difficulties in defining the relevant market aside, trademark caselaw provides a general exception to the doctrine of secondary meaning. A line of cases permits the use of similar trade dress or [*170] marks where two geographically remote users adopt similar marks in good faith and without knowledge of each other's use. 61 This permissive use is known as the "good faith territorial use" exception.
In computer applications, however, this defense seems of little use. Nearly all commercially viable software targets a national market. This is especially so when one considers that many businesses possess communication "backbones" which allow rapid data transfer and manipulation between geographically remote sites. For example, a file server 62 which is located in California may drive the applications of a user whose node, or terminal connection, is physically in New York City. In this manner, most computer software falls under the ambulatory exception to territorial expansion.
Where the relevant consumers "are ambulatory and on the move back and forth across the nation," then the good faith territorial use exception to secondary meaning will not apply. 63 Software consumers are ambulatory in two distinct manners: first, through their physical movement across the country, and second, through their "virtual" movement across the country through computerized means. Additionally, the proliferation of personal computers and the establishment of both software franchise stores and computer "superstores" create a national audience for most applications as they are released. It is inconceivable that a successful computer program sold on the west coast would fail to penetrate markets throughout the rest of the country, as may be the case with locally produced cookies, or clothing. 64 Thus, trademark's common-law defense of geographically remote use offers little help to a putative software infringer.
B.
Inherently Distinct Defined
Software which fails to possess secondary meaning, perhaps because it is new to the marketplace or has failed to obtain substantial market penetration, may still enjoy protection if that software is inherently distinctive. Although the Supreme Court noted in Two Pesos that [*171] protection accrues in inherently distinct trade dress, the Court's explication of this category is only slightly helpful. The Court appears to employ traditional trademark categories when it analyzes the inherent distinctiveness of trade dress. 65
Consequently, trade dress, like trademark, is classified in categories of increasing distinctiveness - namely, (i) generic, (ii) descriptive, (iii) suggestive, (iv) arbitrary, and (v) fanciful. According to Two Pesos, "the latter three categories of marks, because their intrinsic nature serves to identify a particular source of a product, are deemed inherently distinctive and are entitled to protection." 66 Note, however, that in some jurisdictions a finding of suggestiveness does not imply that the dress is a strong one. 67 Thus, although trade dress which falls within the three categories determined to be inherently distinctive (i.e., suggestive, arbitrary, and fanciful) merits protection without a showing of secondary meaning, courts may nevertheless find that the dress is not particularly strong and accordingly limit the amount of protection afforded that dress.
Conversely, generic marks never obtain protection, even in light of an established secondary meaning. 68 On the other hand, descriptive marks, although not inherently distinct, may acquire distinctiveness if they obtain an established secondary meaning in the relevant market. 69 A descriptive trade dress, to invoke an oft-cited example, would include a lemon-shaped bottle employed to sell lemon juice, and would require an established secondary meaning associating the product with a particular source of origin in order to garner protection. 70
One commentator has suggested that "if the "total image' of a trade dress creates an unexpected visual image of the particular product it represents, then the trade dress is inherently distinctive and protectable." 71 Although the choice of the word "unexpected" seems inappropriate, the point is fundamentally correct. In light of the expansive definition associated with trade dress in Two Pesos, a com [*172] puter's display and interface fall potentially within the parameters of inherent distinctiveness.
C.
Likelihood of Confusion
Once an interface is shown either to be inherently distinct or to possess secondary meaning, a Lanham Act section 43(a) cause of action requires that there exist a likelihood of consumer confusion between the established product's trade dress and the interloping interface. There are at least four possible types of consumer confusion: (i) simple product confusion, (ii) confusion as to source of sponsorship, (iii) subliminal trademark association, and (iv) reverse association. 72 An explanation of these scenarios is helpful before discussing the variables weighed in the confusion calculus.
Simple product confusion occurs when purchasers of a product believe it to be another product entirely. For example, if one confuses Microsoft Word with Lotus' Ami Pro because of some interface similarity, then simple product confusion has occurred. 73 Confusion as to source of sponsorship, the second sort of consumer confusion, is perhaps the most plausible scenario in the computer context. This type of confusion takes place when the consumer mistakenly believes that the owner of the trade dress has authored or approved the infringing product. For example, if a software company develops a unique interface that gains market popularity and a competitor copies the design, consumers who purchase the infringing program may wrongly conclude that the design comes from the first company. This is particularly true in today's software market where de facto standards substantially decrease the learning curve required of new software. Manipulation of windows within Microsoft brand programs, for example, is consistent across applications. A competing producer who copies this configuration may cause consumers to conclude either that Microsoft developed this interface as well, or, at a very minimum, that Microsoft licensed its rights in the interface to the infringing producer. In either case, confusion as to the source of the product occurs. 74 The third type of consumer confusion occurs when the [*173] infringer gains a foothold in an existing market "by exploiting subliminal or conscious association with [a] protected name, mark, or trade dress." 75 Finally, reverse association occurs when the consumer believes that the infringer is responsible for the original product. 76
Although courts recognize at least four distinct types of consumer confusion, each type involves a similar test. When faced with an allegation of likely consumer confusion, courts have generally followed the eight factor test developed by the Second Circuit in Polaroid Corp. v. Polarad Electronics Corp. 77 The Polaroid criteria require courts to examine: (i) the strength of the trade dress, (ii) the similarity of the trade dress, (iii) the competitive proximity of the products, (iv) whether the original dress owner will bridge the competitive gap existing between the products, (v) whether actual confusion is occurring, (vi) good faith defenses, (vii) the quality of the infringer's product, and (viii) the sophistication of the buyers. 78 In this manner, courts address each question of confusion ad hoc, weighing each factor to determine if, on balance, a likelihood of confusion exists. 79 Unfortunately, this test suffers from an acute problem of "open texture" because none of the criteria weighed in the determination are individ [*174] ually dispositive. 80 Therefore, much room remains for judicial activism under the guise of the Polaroid test.
1.
Strength of the Mark or Trade Dress
The focus under this factor is on the "distinctiveness of the mark, or more precisely, its tendency to identify the goods sold under the mark as emanating from a particular, although possibly anonymous source." 81 Furthermore, two additional criteria guide courts in assessing the strength of a dress: (i) the degree to which the mark is inherently distinctive, and (ii) the degree to which it has acquired secondary meaning by becoming distinctive in the marketplace. 82 It is important to note, however, that courts may measure the strength of trade dress in two different manners. First, trade dress consisting entirely of arbitrary elements is inherently "stronger" and thus merits more protection than dress involving less arbitrary elements. Second, courts deem trade dress that possesses greater market penetration as stronger and worthy of greater protection since consumers rely upon the distinctive dress to identify the source of the product's origin.
2.
Similarity of the Marks
In conducting this inquiry courts consider the general impression that the dress creates, "keeping in mind all factors which the buying public will likely perceive and remember." 83 For computer software the inquiry may focus on the placement of the command predicates, 84 the placement and configuration of the menu hierarchy or menu bar, the use of unique or nonobvious identifiers to invoke command predicates, and the overall "look and feel" of the interface. In many respects, however, this gestalt inquiry begs the ultimate question that this Note analyzes - whether the "look and feel" of a software interface is protectable under the Lanham Act.
3.
Competitive Proximity of the Products
Under this Polaroid factor, courts determine whether the goods generally compete in the same product market, because, "to the ex [*175] tent goods ([or trade dress]) serve the same purpose, fall within the same general class, or are used together, the use of similar designations is more likely to cause confusion." 85 Courts may consider whether the products differ in content, geographic distribution, market position, and audience appeal. 86 Hence, a spreadsheet interface that proves particularly unique or acquires strong secondary meaning in its market may not be protectable if another producer employs similar "look and feel" in communications software or in a structural design program since both of these latter programs purportedly appeal to a different audience - specifically, consumers of telecommunications or structural design applications. Unfortunately, because software markets seem to possess the unique feature of collapsed consumerism, this inquiry may prove moot from its inception.
"Collapsed consumerism" refers to the fact that identical software consumers occupy diverse positions across the market spectrum. In other words, it is highly unlikely that one uses a computer solely for the task of spreadsheeting or telecommunicating. Individual users, or alternatively a single class of users, purchase programs that perform a variety of computational functions. For this reason, the market isolation or independence that may arise for other goods collapses when one discusses software. In short, attempts at subdividing the computer software market into smaller submarkets fundamentally misconstrue the systemically unique nature of the market. 87
4.
Whether the Dress Owner Will Bridge the Gap
The relevant question under this inquiry is whether the senior dress owner will enter the market occupied by the dress infringer. Like the analysis under the previous factor, the unique nature of the software industry largely renders this inquiry moot as well. Both collapsed consumerism and the superfluidity of information transfer 88 make it extremely likely a priori that a senior user will either bridge the gap or, at a minimum, suffer harm through unauthorized use of [*176] its dress. In other words, unlike most product markets, the relative ease of program translation and the existence of consumer unity create significant economic incentives for producers to bridge platform gaps in virtually all cases of software success. 89
5.
Actual Confusion
Evidence of individual instances of actual consumer confusion supports the claim that there exists a likelihood of confusion for the entire consuming class. Unfortunately, this evidentiary question is generally quite difficult to assess. 90 Moreover, although in most jurisdictions the plaintiff need not prove actual confusion in order to prevail, at least one circuit has held that "it is certainly proper for the trial judge to infer from the absence of actual confusion that there was also no likelihood of confusion." 91 Further, in at least two circuits, whether one must prove actual confusion or a likelihood of confusion differs depending upon whether injunctive or monetary relief is being sought. 92
6.
Defendant's Good Faith Defense
Because protection of trade dress is grounded in the tort of palming off, an infringer can often escape liability if the infringer adopted the dress without the intention of capitalizing on the owner's good will. 93 Good faith may exculpate an infringement, for example, if the [*177] infringer adopted the "look and feel" either because it best expresses the characteristics of the interface (thus qualifying as "descriptive" of the product), or because the infringer did not know after reasonable inquiry that the senior user possessed a similar dress. 94
Unfortunately, the good faith defense, although well suited to the realm of trademarks, seems a tenuous and illogical fit when applied to software. First, although theoretically possible, it is difficult to conceptualize an interface that qualifies as truly descriptive of the product. 95 Second, software development is a much more dynamic process than the development present in other industries. Specifically, little economic cost accrues to software firms that wish to investigate and copy the "latest" interface or "look and feel." 96 Therefore, as a practical matter, a manufacturer's cry of serendipitous and independent development generally stinks in its mouth.
On the other hand, what makes little sense when wielded as a shield makes a great deal of sense when used a sword. Although the defense of "good faith" seems illogical in the realm of computer software, some plaintiffs may use a lack of good faith to overcome other evidential burdens in the Polaroid test. The Second Circuit held, for example, that "evidence of intentional copying [which is the opposite side of the "good faith' coin] raises a presumption that the second comer intended to create a confusing similarity." 97 [*178]
7.
Quality of the Infringer's Product
If the infringing product is inferior in quality when compared with the senior product then the senior user has a right to protect "the good reputation associated with his mark from the possibility of being tarnished by inferior merchandise of the junior user." 98 This scenario is easy to imagine, and indeed borders on commonplace in the software industry. Because individual style and expertise in writing program code directly influences the elegance, speed, and sophistication of the interface, a sloppy effort by the programmer at the planning or coding stages of software development can render a potentially useful interface quite clumsy. Damage to the original designer's reputation could occur if consumers are likely to believe that the designer either wrote this clumsy interface or somehow approved of its use by the infringer. Note, however, that this factor also begs the question as to whether consumer confusion is likely to occur because it assumes confusion at the beginning of the inquiry. In other words, although potential injury to the owner's reputation is useful in determining the relevant equities, this injury does not facilitate the primary inquiry: whether confusion is likely to take place.
8.
Sophistication of Buyers
The final Polaroid factor examines the sophistication of the relevant purchasers. Courts should properly consider "the general impression of the ordinary purchaser, buying under the normally prevalent conditions of the market and giving the attention such purchasers usually give in buying that class of goods." 99 This final inquiry is problematic for reasons this Note articulates in Part II.A. 100 In short, software purchasers vary greatly in their level of purchasing sophistication and cannot be assumed to be a homogeneous group with respect to their sophistication and purchasing knowledge. 101 For this reason, buyer sophistication is generally unhelpful when analyzing software industries, unless courts render a finding of fact concerning [*179] the sophistication of the relevant market - an inquiry itself fraught with peril. 102
9.
Additional Remarks
The Second Circuit developed the Polaroid criteria to test the likelihood of consumer confusion with respect to trademarks. Trade dress protection proceeds under the common law developed for bland trademark applications - trade dress' city cousin. Indeed, the Two Pesos decision implies that similar analysis is appropriate for both trade dress and trademark claims. 103 However, in the "look and feel" realm of software, the parallel development and like substantive features of trademarks with respect to trade dress do not possess the degree of similarity sufficient to justify identical treatment. Courts must articulate other criteria to govern the likelihood of confusion in the software context. The Polaroid factors must expand and grow as technology expands and alters the trade dress landscape.
New criteria for determining the likelihood of confusion could stem from existing factors. The similarity of computing platforms, for example, parallels competitive proximity of products. 104 However, trade dress appearing in one computing platform may not warrant protection when imitated on a competing platform. A GUI which appears in UNIX for mainframe use, for example, would likely fall outside the scope of trade dress protection when applied to the MS-DOS environment because the platforms are so substantially dissimilar. 105 On the other hand, the same GUI appearing in O/S 2 proba [*180] bly deserves protection in the MS-DOS environment because these operating systems are direct competitors. Accordingly, courts must remain both technologically-informed and open-minded as computational platforms increasingly become the source of litigation. Although Polaroid continues to serve valid doctrinal purposes, it must not be allowed to stifle new arguments developed in light of advancing technology.
D.
Functionality as a Defense to Infringement
A plaintiff makes out a prima facie case of trade dress infringement under section 43(a) of the Lanham Act if the plaintiff is able to show that the trade dress is distinctive, either inherently so or through acquired secondary meaning, and that a likelihood of consumer confusion exists. In spite of this factual showing, an infringer may avoid liability by proving that the allegedly infringing trade dress feature is functional or mandated by functional concerns. 106 It is important to note that courts, and not Congress, have required that protected trade dress elements be limited to "nonfunctional" features. 107 Courts have embraced the functionality argument because the purpose of the functionality defense is "to protect advances in functional design from being monopolized [so as] ... to encourage competition and the broadest dissemination of useful design features." 108
In Inwood Laboratories Inc. v. Ives Laboratories, Inc. the United States Supreme Court stated that "in general terms, a product feature is functional if it is essential to the use or purpose of the article or if it affects the cost or quality of the article." 109 The Court concluded that [*181] a prescribed medication's blue and white capsules were functional to patients as well as to doctors and hospitals for various reasons: elderly patients often commingle medications in one container and rely on color to differentiate one medication from another, and patients associate therapeutic effect with the medication's color. 110 Although the discussion of functionality in Inwood Laboratories is clearly dicta, all jurisdictions allow infringers to defend themselves on grounds of functionality. 111 This is entirely logical because to hold otherwise would establish a de facto monopoly in a trade dress necessary both to the product itself and to the product's class, and would therefore contravene the social and economic policies animating the Lanham Act. Because the objectives of the Lanham Act differ markedly from that of the Patent Act, for example, 112 protecting functionally dictated trade dress would defeat the purposes of the Lanham Act. 113
Although the courts of appeals differ in the precise terms they use to define "functional" trade dress, 114 a common thread emerges. Namely, a functional trade dress is one which other producers would need to mimic in order to compete effectively. 115 Additionally, if few [*182] available alternative designs exist, or if the alternative designs are available only at increased cost resulting in disproportionate economic inefficiency, then trade dress is functionally required and will not be protected. 116 Furthermore, trade dress inquiry focuses on "whether the whole collection of elements taken together are functional... Functional elements that are separately unprotectable can be protected together as part of a trade dress." 117 Thus, at least two circuits have held that one may have a protectable trade dress interest in a combination of product features that includes one or more functional features, so long as the totality of features is nonfunctional. 118
Computer lawyers must be careful, however, to distinguish trade dress that is de facto functional from that which is de jure functional. The Court of Customs and Patent Appeals noted that the term "func [*183] tional" has two distinct connotations, which courts often confuse in their decisions. 119 De facto functionality connotes "functionality" in the lay sense, "indicating that although the design of a product, a container, or a feature of either is directed to the performance of a function, it may be legally recognized as an indication of source." 120 A product feature that is de facto functional may be afforded protection. The legally relevant inquiry centers on de jure functionality.
De jure functionality, on the other hand, identifies a purely legal conclusion, irrespective of whether the feature concerned is directed to the performance of a function. Thus, the pertinent question is what elements precede this conclusion. The Court of Customs and Patent Appeals reasoned that the definition of de jure functionality follows from a two step syllogism. First, "functional" means "utilitarian." Second, " "utilitarian' means "superior in function (de facto) or economy of manufacture,' which "superiority' is determined in light of competitive necessity to copy." 121 Therefore, in determining whether a product element is de jure functional, courts ask whether protection of the element from imitation will unreasonably interfere with a competitor. 122 De jure functionality, in other words, balances the Lanham Act's goals of proscribing unfair competition and false designation of origin against economic efficiency.
In what manner, therefore, do courts determine what trade dress is functional or superior in utility or economy of manufacture? At least three factors are available for the legal calculus of functionality and superiority of design. First, the existence of an expired utility patent that discloses the utilitarian advantage of the design seeking trade dress protection may be evidence that the dress is functional. 123 However, because software interfaces generally fall outside the scope of patents, 124 this factor is not helpful. Second, if the originator touts [*184] the utilitarian advantages and features of the design in its advertising, courts may infer a claim of functionality. 125 This Note argues in Part II.A that software manufacturers are well advised to advertise in advance of distribution of software to establish the secondary meaning of their trade dress before the possibility of infringement arises. However, if advertisements emphasize the utilitarian features of the interface too much, they may actually cripple the originator's later claim of infringement. Finally, when determining whether trade dress is functional or superior in utility, the existence of no other cost-effective and efficient design alternative is significant. 126 This final criterion provides the most trouble for publishers seeking to avoid claims that their GUIs are functional, and must be explored more fully.
One can foresee at least two distinct claims with respect to the cost-efficiency of a software's "look and feel." First, the infringing developer could argue that the interface is functional because it represents the cheapest design available to achieve the desired end. Thus, the infringer might assert that flow-charting, data manipulation, and program code constraints (or, alternatively, inherent program language efficiencies) require this particular "look and feel." This is the argument from developmental efficiency. 127 A second, unrelated argument applies mostly to programs that require substantial computational resources to achieve the program's desired result. 128 In this scenario, the infringer could argue that a need for computational speed and efficiency dictates the interface or the program's "look and feel." In other words, although other interfaces exist that could be developed with little pecuniary harm to the manufacturer, thus undermining the argument from developmental efficiency, computational resources require this specific design. This is the argument from computational effi [*185] ciency. Under either argument putatively nonfunctional trade dress would not be protectable because of de jure functionality.
Gregory Wrenn has argued that because the functionality argument focuses upon what is in effect economic impact, in those instances where competitors may fairly compete without copying the original manufacturer's trade dress, "protection should be extended to such trade dress without regard to metaphysical distinctions between de facto functional and de facto nonfunctional features." 129 This conclusion is entirely correct. As suggested in In re Morton-Norwich Products, Inc., 130 this shifts the focus away from inquiries into bland product utility and necessary functional causation and towards an inquiry into product identification and inequitable monopolistic results.
Wrenn suggests a bifurcated approach to GUI trade dress applicability, 131 upon which this Note expands, under which the state of the computer market dictates the viability of the trade dress claim. Certain software markets possess established standard interface configurations or GUIs. The Apple Systems software, for example, controls the graphical displays observed by users from the systems or instruction mix level. Although readers should not concern themselves with the technological aspects involved, the practical implication is quite important - namely, third party software publishers all invoke the same base level algorithms, or "system calls," thereby creating applications that all possess a substantially similar GUI from the user's point of view. 132 Thus, for example, the use of folders, the drawing of windows, the movement of windows, and the placement and look of dialogue boxes appear similar throughout virtually all Apple applications. [*186]
In software markets with such established standard interfaces, consumers expect and demand that new applications adhere to these standards. 133 Broad trade dress protection in these markets would prevent effective competition among similarly situated products and should be avoided. Therefore, in markets with an established "standard interface," both the argument from computational efficiency and the argument from developmental efficiency mitigate against granting trade dress protection for GUIs. 134 To return to the example of Apple's system, protection of the basic "look and feel" of the Apple GUI would force other Apple-oriented publishers to develop an alternative operating system. This is both computationally and developmentally inefficient, and thus requires a finding of de jure functionality. In other words, the next best alternative GUI is economically prohibitive by virtue of both development and implementation costs.
On the other hand, in markets lacking a standard interface the case for de jure nonfunctionality gains force. The existence of alternative interfaces strongly implies that competitive efficiency is not drastically affected by the existence of any particular interface. After all, why would a competitor use its own interface when a "functionally" dictated alternative is so clearly superior that its elements must be rendered public domain to insure product competition? Consequently, protection of one particular interface does not diminish the competitive possibilities for other producers, since reasonable market alternatives have already been established. The exception to this analysis, however, occurs when a shift in technology renders an older interface de jure inferior. In this scenario the existence of market alternatives possesses no probative force because market maturation renders the old market equilibrium inapplicable. A new market equilibrium must be established with both the new technology and its attendant development, computation, and competition costs firmly in mind. Nevertheless, exceptional cases aside, both the common-law tradition and legislative history of the Lanham Act favor protection of distinguishing trade dress where consumers recognize the source of a product's origin through a GUI and secondary manufacturers seek to capture market share through imitation of the successful GUI. 135 [*187]
As Professor Callmann recognizes, however, "functionality is often a matter of degree, rather than a binary yes-or-no matter." 136 At one polar end of the functionality spectrum rests perfectly standard interfaces. Apple's System software GUI, for example, represents this extreme position in the spectrum where trade dress protection should not occur. At the other end of the continuum rests perfectly substitutable competing interfaces where protection of any individual variation should accrue. In effect, because substitute interface configurations exist, in these instances society suffers no economic harm through the grant of protection. However, since cases that fall on the polar extremes are rare, Callman's admonition rings true. Indeed, the Second Circuit was on the mark when it concluded that "in between, the case for protection weakens the more clearly the arrangement of allegedly distinctive features serves the purpose of the product (including maintenance of low cost), especially where the competitor copying such features has taken some significant steps to differentiate its product." 137
Ultimately, determination of functionality represents a mixed question of law and fact in which evidence of consumer confusion as to source of product origin must both weigh against and be consonant with prevention of substantial competitive inefficiency. The defense of functionality represents the most severe threat to publishers seeking trade dress protection for their unique GUIs. Indeed one commentator asserts that interfaces are by definition functional and therefore outside the scope of trade dress protection in toto. 138 This conclusion is clearly incorrect, but nevertheless alludes to the threat functionality poses to publishers seeking the Lanham Act's protection.
With the three elements of a trade dress claim firmly in mind, Two Pesos becomes highly relevant. The High Court's decision not only alters the application of these three elements, but also, more importantly, tacitly supports the argument that trade dress protection extends to software interfaces under certain conditions.
III
Two Pesos v. Taco Cabana
Two Pesos teaches intellectual property lawyers two fundamental lessons. First, the decision settles a conflict among the circuits concerning whether inherently distinctive trade dress merits Lanham Act protection without a necessary showing of secondary meaning. Sec [*188] ond, the majority's expansive interpretation of both trade dress and "look and feel" provides ample justification for the argument that GUIs meeting the three substantive criteria outlined above fall within the Lanham Act's ambit of protection.
A.
Factual Basis Giving Rise to the Dispute
Respondent Taco Cabana operated a chain of fast food restaurants, which were located in Texas. By 1985 respondent owned five restaurants in the San Antonio area. 139 Taco Cabana employed an unusual trade dress which created a festive Mexican dining experience. Respondent described its dress as follows:
[a] festive eating atmosphere having interior dining and patio areas decorated with artifacts, bright colors, paintings and murals. The patio includes interior and exterior areas with the interior patio capable of being sealed off from the outside patio by overhead garage doors. The stepped exterior of the building is a festive and vivid color scheme using top border paint and neon stripes. Bright awnings and umbrellas continue the theme. 140
Petitioner Two Pesos opened a restaurant in Houston which employed a motif very similar to that present in respondent's locations. 141 Subsequently, Taco Cabana expanded into the Houston market, where Two Pesos was doing business, and brought suit in the Southern District of Texas for trade dress infringement pursuant to section 43(a) of the Lanham Act. The trial court instructed the jury that Taco Cabana's trade dress was protected if it either was inherently distinctive or had acquired secondary meaning. The Fifth Circuit affirmed the trial court's statement of the law in this regard, following precedent from that circuit. 142 In stark contrast, the Second Circuit in Vibrant Sales, Inc. v. New Body Boutique 143 held that trade dress which fails to possess secondary meaning, even if it is inherently distinctive, will not be protected by the Lanham Act. The Supreme Court, therefore, granted certiorari "to resolve the conflict among the Courts of Appeals on the question whether trade dress which is inherently dis [*189] tinctive is protectable under 43(a) without a showing that it has acquired secondary meaning." 144
B.
The Court's Decision and Rationale
Justice White's majority opinion focuses on the text of section 43(a) and concludes that no statutory reason exists for treating inherently distinctive verbal or symbolic trademarks differently from inherently distinctive trade dress. 145 In an effort to comport parallel analysis into the Lanham Act, the majority notes that there is "no basis for requiring secondary meaning for inherently distinctive trade dress protection under 43(a) but not for other distinctive words, symbols, or devices capable of identifying a producer's product." 146 Moreover, requiring secondary meaning to manifest itself in trade dress which is inherently distinctive would defeat the purposes of the Lanham Act. "By making more difficult the identification of a producer with its product, a secondary meaning requirement for a nondescriptive trade dress would hinder improving or maintaining the producer's competitive position." 147 In other words, because inherently distinctive trade dress is capable of identifying the source of the product's origin, protection under section 43(a) of the Lanham Act accrues without further proof that the dress has acquired secondary meaning. Therefore, relying upon both statutory construction and the statute's animating purposes, the Supreme Court established protection for inherently distinctive trade dress even where the market has yet to identify any one particular producer with the product. 148
C.
Two Pesos' Implications for Intellectual Property
In Two Pesos the Supreme Court examined two similar restaurants and held that although their overall appearance derived from furnishings, paint, awnings, signs, and a garage door, the "look" of the restaurant was inherently distinctive. Since the Court found the "look" of a restaurant inherently distinctive, computer lawyers will by analogy quickly assert that screen displays or any other element of the software which the public can observe, if distinct, will merit Lanham Act pro [*190] tection. Importantly, Lanham Act protection will accrue even where these same elements would fail to qualify for copyright protection.
Unfortunately, the Two Pesos decision fails explicitly to delineate standards for determining when inherent distinctiveness for the "overall impression" of a good obtains. The Court adopted with approval Judge Friendly's categories of distinctiveness, thus his rubric apparently represents the Court's view as well. 149 If so, the Court failed to observe a critical distinction between trademark and trade dress. Specifically, although determining whether a word or phrase is fanciful, arbitrary, or suggestive may be a relatively simple task, determining whether a trade dress, such as a restaurant's decor or a GUI's impression, meets this test is quite another task. This latter finding is subjective rather than empirical and suffers from acute difficulties associated with intuitive or impressionistic reasoning. 150
Definitional difficulties aside, however, Two Pesos offers hope to software producers because of the "Gestalt" 151 view adopted by the High Court. Trade dress traditionally involved a product's packaging. The Courts of Appeals subsequently expanded this common-law application to encompass virtually any nonfunctional element that may be observed by the public and used to identify a product's source of origin. The Supreme Court, however, had not affirmed such an expansive interpretation of trade dress and had focused on more "traditional" dress categories. 152 Therefore, Two Pesos implicitly stands for the proposition that an expansive interpretation of trade dress is consistent with Supreme Court views. In light of Two Pesos, therefore, if a GUI meets the other substantive criteria established through common-law tradition, then trade dress protection should accrue. [*191]
IV
Final Comments on Trade Dress as Applied to GUIs
A.
The Requirement of Distinctiveness
A GUI acquires distinctiveness either because (i) it is inherently so, or (ii) it has acquired secondary meaning. GUI protection stems most easily from those instances in which the interface is inherently distinctive. In the rapidly changing computer landscape, the length of time required to establish secondary meaning could be quite long relative to significant changes in technology - especially in those jurisdictions where the product must acquire secondary meaning before the putative infringement begins. 153 Moreover, the lapse of time before secondary meaning attaches could render the particular interface configuration de jure functional as other manufacturers adopt similar interface designs. With this in mind, GUIs which qualify as inherently distinct stand on terra firma when compared with their secondary-meaning brethren.
In Computer Care v. Service Systems Enterprises, Inc., 154 the Seventh Circuit commented that inherently distinctive trade dress must be either arbitrary 155 or "sufficiently distinctive to allow consumers to identify the product from the trade dress." 156 Additionally, the Seventh Circuit held that "uniqueness [with respect to other competitors in the relevant market] supports a finding that a trade dress is inherently distinctive." 157 Computer Care's broad definition supports this Note's conclusion that de jure nonfunctional GUIs qualify for protection in those instances where consumers identify producers through their GUIs.
Furthermore, because uniqueness and the ability to identify source of origin define the scope of inherently distinctive GUIs, trade dress protection accrues for the entire GUI rather than for individual elements of the interface. The use of a mouse pointing device or of layered windows, for example, would fail to be either unique or identifying. Such interface devices have long since become standard fare and as such are not protected either individually or as part of a total interface. [*192]
This is not to say, however, that all GUIs are now public domain. Certainly the concept of a GUI 158 is public domain. Protection of any interface which employs icono-graphic features, window elements, window layering, and a pointing device fails because of de jure functionality - protection would unfairly and unnecessarily constrain competition. However, specific configurations or combinations of GUIs certainly fall within the ambit of both inherent distinctiveness and nonfunctionality. Thus, although Apple surely lost its claim of general protection for all GUI configurations, a narrower claim of protection for a specific interface could still survive on the merits if a competing interface is likely to cause consumer confusion. 159
Alternatively, a publisher could assert that its particular GUI possesses secondary meaning. As this Note argues in Part II.A, a sound strategy for such publishers necessarily involves substantial advertisement. Ad
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